Appeal Practice

As illustrated in the chart above,
the ZPS Group has been very successful in utilizing
the USPTO appeal process during the examination of a
patent application. The USPTO appeal process may be
initiated to cause a review of the application before
a panel of administrative patent justices if an examiner
persists in the rejection of any of the claims in an
application. The process may be used to overturn incorrect
or unreasonable assertions set forth by examiners.

A few examples of successful appeal decisions are summarized
below:

USP 7,421,650: In this case, the Examiner
rejected claims as being obvious over a combination
of prior art references under 35 USC 103(a). The
Examiner was reversed because the Examiner failed
to allege that the addition of references to a primary
reference cured deficiencies of the primary reference.
Accordingly, the Examiner had failed to establish
a prima facie case of obviousness.

USP 7,288,740: The Examiner rejected
all claims as being obvious over a combination of
prior art references under 35 USC 103(a). The rejections
were reversed because it was demonstrated that the
Examiner had relied upon impermissible hindsight
in piecing together the prior art to arrive at Applicant’s
invention.

USP 7,581,885: BPAI reversed the Examiner’s
35 USC 102 rejection based on our argument that
the Examiner was using a term definition that was
not consistent with that defined in the Specification.
The Examiner’s rejections under 35 USC 103(a)
were also reversed based on our argument that the
Examiner used had impermissible hindsight and mere
conclusory statements to support the obviousness
rejection.

US 2006/0151446: In this case, the
Examiner rejected all the Applicant’s claims
as being anticipated by the prior art under 35 USC
102(b). The rejections were reversed because it
was demonstrated that the function claimed was not
an inherent characteristic of the prior art.

* The Appeal Success Rate represents the percentage
of prior cases in which, after initiating the USPTO
appeal process, prosecution was reopened, the case
was allowed, or the BPAI reversed the Examiner’s
rejection in whole or in part. The prior results referred
to in this website do not guarantee or suggest a similar
outcome in any future case.